December 2, 1998

RE: COMMENTS REGARDING THE ADVANCED NOTICE OF PROPOSED
RULEMAKING PUBLISHED IN THE OFFICIAL GAZETTE ON OCTOBER 27,
1998 AT 1215 OG 87.

The comments offered infra are the comments of the
undersigned and reflect my personal views on the proposals
which impact the number of claims to be allowed in an
individual application and the treatment of Information
Disclosure Statements (Topics 4, 9 and 10). Although I have
concerns about several other proposed changes to the
regulations, I offer comments as to the Topics noted above
since these appear to have such an impact that regulatory
changes should not be proposed. I will offer comments as to
some of the other proposed changes if and when they are offered
as proposed changes to the regulations.

I. Comments Against Limiting the Number of Claims in an
Application (37 CFR 1.75)-- (Topic 4)

This commentor believes that the PTO should not propose a
change to the regulations limiting the number of claims in an
application. There are a multitude of reasons for this belief.
It is interesting to note that the Supreme court, in the
recently decided case of Pfaff v. Wells Electronics, Inc., No.
97-1130, decided November 10, 1998 rejected the long-followed
"reduction to practice" and "substantial completion" standards
in evaluating an on sale question since the terms were not
found in the statute. The PTO appears to want to interpret the
statute (35 U.S.C. 41) in a way obviously not intended by
Congress by reading into it an ability to limit the number of
claims where Congress has expressly indicated the contrary.
Some detailed comments follow:

1. In In re Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA
1979), the court effectively eliminated the burden on the
office argument where many claims were presented. Thus, the
comment that large numbers of claims impose a severe burden on
PTO clerical and examining resources is without merit. The
remedy already in place to discourage the wide use of excessive
numbers of claims is the significant fee charged for each claim
in excess of twenty and each independent claim in excess of
three.

2. There is no statutory authority to limit the number of
claims subject to examination in a single application. 35 USC
41(a) places limits on the number of independent claims allowed
for a defined filing fee and the total number of claims allowed
for a defined filing fee. Effectively, by fixing a fee for each
claim in excess of twenty and each independent claim in excess
of three (and at a relatively significant rate), the statute
provides for an unlimited number of claims in an application so
long as an applicant pays the fee(s) statutorily provided
therefor.

3. The PTO is not the inventor and cannot and should not
decide for the inventor the number of claims deemed appropriate
or proper in order to properly claim his or her invention. As
long as the claims differ, one from the other, applicant has a
statutory right to claim his invention in as many ways as he
chooses so long as he pays the statutorily required fees
therefor. So long as the claims particularly point out and
distinctly claim the subject matter which the applicant regards
as his invention, he or she should be allowed to present claims
to the invention to the extent allowed by the statute. If
Congress intended an upper limit on the number of claims which
would be examined in a single application, it would have done
so. However, it chose to charge significant fees for each claim
over a statutorily set number rather than limit the number of
claims possible in a single application.

4. Interestingly, the discussion regarding the proposal
reflects that over 95% of all applications filed in FY 97
contained fewer than 40 claims and fewer than six independent
claims. With this dramatic total of applications which comply
with the number of claims desired to be fixed by regulation,
what is the sense and logic in restricting the small number of
inventors from submitting a larger number of claims. The PTO
has presented no evidence or other logical explanation showing
that the applicants who file more than forty claims do not need
them. Moreover, there is no evidence reflected in the
discussion suggesting that the larger number of claims are any
more difficult to examine or have a significant adverse effect
on reaching PTO goals.

The PTO has said, in its discussion, that it has no problem
with the number of claims submitted in 95% of the applications
filed. In the remaining applications, there is no showing in
the discussion of any particular problem nor any indication
that the larger number of claims are not necessary or that such
an insignificant number of applications has an adverse effect
on PTO resources that is not counterbalanced by at least an
equal number of applications wherein only a few claims are
presented.

Accordingly, this commentor believes that no limit should be
placed on the number of claims allowed to be examined in a
single application.

This commentor is against imposing the limits or
requirements set forth in the discussion for reasons that have
to concern every practitioner. It is pointed out at the outset
that the proposed practice is in conflict with section
552a(d)(2)(i) and (ii) of Title 5 of the United States Code
wherein it is made clear that an applicant has a right to
records which are accurate, complete, timely and relevant. If
the PTO refuses to allow an applicant to amend his record for
accuracy and completeness or tell him that the manner in which
he has amended it is inappropriate, it is in direct conflict
with the above identified section. Further comments are listed
below:

1. Applicants should not be subjected to possible legal
holdings of unenforceability because of the PTOÂ’s
desire to avoid consideration of prior art uncovered during a
prior art search or cited by an examiner in a related
application. For reasons which appear to be based upon three
examples of exaggerated submissions, the PTO desires to change
the well established and accepted practice of allowing
applicants to submit prior art in the manner presently allowed
by the regulations. It is unfair and unacceptable to provide
for such an overreaching change in the practice to accommodate
the few problems alluded to in the discussion. What data is the
PTO relying upon which justifies the tremendous change in the
IDS practice. It was not that long ago that the PTO was looking
for ways to make the submission of an IDS mandatory. Now, after
many applicants (we donÂ’t know the number or
percentage since that information has not been provided) have
attempted to comply with their duty of disclosure by providing
submissions under the existing regulations, the PTO now wants
to restrict what it receives to a minimum number of references
even though the examiner might indeed skim through or review
many more patents than the number cited in a couple of the
examples presented in the discussion when he or she searches
the invention.

2. It has been a long standing practice that applicants can
comply with their duty of disclosure by citing references
believed to be relevant without evaluating the references and
applying them in a detailed way to at least each of the
independent claims. When references are uncovered in a search
or are cited in the prosecution of a related application, it
would be disingenuous not to disclose those references to the
examiner. Now, the PTO would have us make the decision for the
examiner where the number of references exceeds 10 and
effectively use the logic of or think like the examiner.
Otherwise, an applicant could be subject to a charge of
inequitable conduct for intentionally withholding or failing to
disclose a reference which he or she knew or should have known
was material to the examination of the application simply
because the examiner has a different view of a reference. No
applicant wants to take such a risk or chance unnecessarily.
Since applicants pay significant fees to have their
applications examined, it would seem that the PTO would be
attempting to encourage more applicants to comply with the duty
of disclosure through the submission of possibly relevant prior
art rather than limiting what the examiner is required to
review. Interestingly, it is quite likely that an examiner
would review much of the submitted prior art as a matter of
course in his search of the prior art.

3. The PTO is proposing to have applicants submit copies of
applications which are already in the files of the PTO.
Considering the fact that there is concern about space, lost
papers and the AdministrationÂ’s desire to rid the
government of burdensome regulations, this commentator is
against such a requirement, particularly since the PTO is
moving towards becoming a paperless office over the next
several years. Copies of U.S. patents are not required to be
submitted. Why, then, are copies of related and
pending/abandoned applications required to be submitted? There
is no adverse impact on the PTO to accessing the pending or
abandoned applications. To the extent that such applications
are not immediately available to an examiner who might be
working on the case, this is commonplace if papers have been
filed which require entry, or fees have to be charged, or
petitions have to be decided. The proposal to require such a
submission appears to have drawbacks to the PTO which would
mitigate against its consideration of such a change in
practice.

In view of prosecution history estoppel (cf. Hilton Davis v.
Warner-Jenkinson, 117 S Ct. 1040 (1997); 41 USPQ2d 1865),
applicants should not be asked to create a record as to a
description of each reference and how it applies to each claim
as any oversight or erroneous comment then becomes useable
against a patentee in any future litigation. This commentor is
vigorously opposed to such a requirement.